Random Paper B Questions

Question 1

Describe the “average consumer” as defined by the CJEU in Lloyd Schufabrik Meyer & Co GmbH v Klijen Handel BV, Case C-342/97.

Answer 1

Facts of case:

(1) Lloyd manufactures shoes in Germany (TM ‘LLOYDS’);
(2) Klijen manufactures leisure shoes specifically. Applied for mark ‘LOINT’S’ in Germany.
(3) Lloyd brought claim against Klijen on grounds that there would be a likelihood of confusion.

In this case, the Court defined the average consumer as follows:

(1) for the purposes of assessing globally the likelihood of confusion, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

(2`) the average consumer only rarely has the chance to make a direct comparison between the different marks so must place his trust in the imperfect picture of them he has kept in his mind.

(3) the average consumer’s level of attention is likely to vary according to the category of goods or services in question.

Question 2

Describe the test devised by the CJEU for establishing that a TM enjoys a reputation for the purposes of section 10(3) of the TMA 1994.

Answer 2

Section 10 TMA 1994:

(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a) is identical with or similar to the trade mark,
(b) where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

This grounds for infringement corresponds to the relative ground under section 5(3).

In ‘General Motors v Yplon’, the CJEU provided guidance in relation to the requirement that the earlier trade mark has a reputation in the United Kingdom.

The Court stated that ‘reputation’ involves a knowledge threshold; a mark would have a reputation where it was known by a significant part of the public concerned by the G/S covered by the trade mark.

Court stated relevant factors to consider when determining if there is knowledge:

(1) market share held by the trade mark;
(2) the intensity, geographical extent and duration of its use;
(3) the size of the investment made by the undertaking in promoting it.

[survey evidence has supporting role]

Question 3

What is the legal test for ascertaining whether a junior use takes an unfair advantage of a repute of an earlier mark with a reputation?

Answer 3

In the ‘L’Oreal v Bellure’ case, the Court ruled that an advantage was considered to be unfairly taken where a third party attempts, through the use of a sign similar to the mark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain an image of that mark without paying any financial compensation and without being required to make efforts of his own in that regard.

The following stages must be followed in order to ascertain whether unfair advantage of a repute of an earlier mark has been taken:

(1) Identify the ‘power of attraction, reputation and prestige’ of the earlier TM;

(2) Establish whether any advantage has been shown to be transferred (or serious likelihood of) to the user of the later mark.
in this case indicative factors:
(i) strength of mark’s repute and degree of its inherent distinctiveness;
(ii) similarity between marks;
(iii) nature as well as degree of proximity between G/S of marks.

(3) Establish that the advantage thereby secured has been ‘unfairly taken’.
(i) In this case, the deliberate misappropriation of repute.

Question 4

Describe briefly the test applied by the CJEU for determining identity between the signs.

Answer 4

In ‘LTJ Diffusion v Sadas Vertbaudet’ (“Arthur” and “Arthur et Felicie”), the judge ruled that a sign is identical with a trade mark where:

—the sign reproduces without any modification or addition all the elements constituting the trade mark; OR

—where, viewed as a whole, the sign contains differences so insignificant that they may go unnoticed by the average consumer.

Question 5

Discuss briefly the importance of the decision of the CJEU in Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01

Answer 5

Art 19(1) TMD 2015 ("New Directive")
(1) A trade mark shall be liable to revocation if, within a continuous five-year period, it is not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. 

What constitutes “genuine use” was developed in 2 cases:

(1) Ansul BV v Ajax
(2) Laboratories Goemar SA v La Mer Technology Inc.

Facts of case (1):
The mark ‘MINIMAX’ was registered for fire extinguishers for the claimant. From 1989, no sale of fire extinguishers. However, sale of component parts of extinguishers, as well as repair and maintenance and the use of the mark an invoices in relation to these services.

The Court ruled that:
(i) use designs solely to preserve the rights under the mark is not ‘genuine use’;

(ii) genuine use requires real use in the market (aimed at public) and not just internal use by the undertaking concerned.
(iii) use of the mark must relate to the G/S already marketed or about to be marketed and for which preparations by the undertaking to secure customers are underway, particularly in the form of advertising campaigns.
(iv) it is necessary to take into account lll the facts and circumstances in order to decide whether commercial exploitation of the mark is real and whether such use is warranted in the economic sector concerned to maintain or create share in the market.
(v) use does not need to be qualitatively significant in order to be genuine;
(vi) use in relation to after sale services could be use which is related to the goods, even though the goods themselves are not sold anymore.

Question 6

What does a trade mark proprietor need to demonstrate in order to establish that there are ‘proper reasons for non-use’ within the meaning of s 46(1)(a)-(b) TMA 1994 and Article 51(1)(a) EUTMR respectively? (Armin Hauple v Lidl Stiftung)

Answer 6

Section 46(1)(a)-(b) of TMA 1994 and Article 58(1)(a) EUTMR provide that failure to use a mark will not affect the fate of the mark if there are ‘proper reasons for non-use’.

In this ‘Armin Hauple v Lidl’, Lidl owned mark ‘LE CHEF DE CUISINE’. Lidl had faced bureaucratic obstacles in opening its supermarket in Austria and after 5 years had lapsed Hauple sought revocation.

Court ruled that TM proprietor needs to demonstrate the following to prove ‘proper reason for non-use’:

(1) The obstacle preventing it from using the mark arouse independently of the proprietor’s will;
(e. g. import restrictions or other government requirements–not financial problems, lack of staff etc as these are deemed to be within the business’s control)

(2) there is a direct relationship between the obstacle and failure to use the mark; and
(e. g. direct relationship= need to obtain marketing authorisation)

(3) the obstacle is such as to make the use of the mark impossible or unreasonable.
(‘hindering’ not sufficient; fact-specific)

Question 7

Explain the requirement that the use of a sign must be “in the course of trade” in the UK to infringe a registered trade mark.

Answer 7

The concept of “use in the course of trade” was defined by CJEU in ‘Arsenal v Reed’.

Facts of case:

(1) Arsenal FC sued Mr Reed for infringement of their trade marks.
(2) Arsenal FC designs and supplies its own products or has them made and supplied by its network of approved resellers.
(3) Mr Reed sold unofficial football souvenirs and memorabilia, with almost all marked with signs referring to Arsenal FC, outside their football grounds.

The Court ruled that “use in the course of trade” is use that:

(1) takes place in the context of commercial activity;
(2) with a view to economic advantage;
(3) not as a private matter.

Question 8

Explain the principle of coexistence in the context of the European Union trade mark system/CTM system.

Answer 8

The CTM system is designed to co-exist with the national TM systems. Each system confers individual and independent but interacting rights. This means that within the EU identical Community and national trade marks may coexist.

A CTM is granted on a 1st come 1st served basis; an earlier national right does not confer preferential rights for the CTM and a pre-existing national right can be used to block or challenge a later CTM application.

A CTM does not destroy an earlier national TM that has not been raised against it; instead, they coexist.

A CTM can however be used to block or challenge a later national level TM application.

Question 9

Explain briefly how the owner of a foreign mark which is well-known in the UK may protect his/her interests in the UK.

Answer 9

A trade may protect his/her interests in the UK through the passage off cause of action. However, the foreign trader merely being well-known in the UK (i.e. having a reputation) in the UK is not enough for a successful passing off claim.

Requirements for goodwill in UK in relation to foreign traders:

(1) Business activity in UK (‘Sherton Corp of America v Sheraton Hotels’; ‘Anheuser-Busch Inc v Bedejouichy Budvar’); and
(2) Customers in UK (‘Starbucks v British Sky Broadcasting’)

Question 10

What was said in relation to goodwill of a foreign trader in the following cases:

(1) Sherton Corp of America v Sheraton Hotels
(2) Anheuser-Busch Inc v Bedejouichy Budvar
(3) Starbucks v British Sky Broadcasting
(4) Scandecor Developments v Scandecor Marketing

Answer 10

(1) Although the claimant had not operated hotels in the UK, the Court affirmed the existence of goodwill on the grounds that bookings had been made through an office the plaintiff maintained in the UK (taking bookings/taking bookings through an agent in UK established a communication mechanism of goodwill).
(2) The Court ruled that sporadic and occasional sales of the claimant’s goods in the UK did not constitute business activity in the UK. Therefore, no goodwill as no stable communication mechanism with consumer.

(3) The Court ruled that where the claimant’s business is carrie don abroad, it is not enough to show that there are people in the jurisdiction who happen to be its customers abroad.
(i) enough for claimant to show that customers are booking/purchasing from an entity in the UK in order to obtain the right to receive the claimant’s services.
(iii) entity can simply be acting on behalf of claimant–doesn’t have to be a branch of claimant.

(4) The Court ruled that goodwill can belong to the subsidiary or distributor operating in the jurisdiction rather than the parent company–if that is the customer’s perception.

Question 11

Are advertising slogans registrable in the UK?

Answer 11

Yes. [However slogans are usually refused registration on the grounds that they are descriptive or that they lack distinctive character.]

OHIM v Erpo Mobelwerk

Defendant wished to register mark ‘the principle of comfort’ for household furniture.

The Court ruled that a slogan could be registered if it is capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from other undertakings (it is distinctive).

The Court also observed that there may be difficulty in establishing distinctiveness of such a mark due to the public’s perception, but that, nevertheless, the same criteria must be applied when assessing the distinctiveness of the mark as to marks of other categories.

Audi v OHIM

The Court ruled that where a mark is also used as a slogan, it cannot be refused registration by virtue of that fact alone. As long as slogan distinguishes G/S, primary function of the slogan is irrelevant.

In this case, Audi attempted to register ‘Vorsprung durch Teeknik’ (advance through technology).

Question 12

Are interior designs of retail outlets registrable in the UK/ Explain your answer.

Answer 12

Yes.

Apple Inc v Deutsches Patent-und

The Court ruled that under article 2 Directive 2008 [“old directive”], a trade mark must satisfy the following criteria:

(1) must be a sign;
(2) capable of graphical representation;
(3) capable of distinguishing G/S of one undertaking from G/S of those of another undertaking.

Court ruled that representation by a design of the layout of a retail store is capable of distinguishing G/S of one undertaking from those of other undertakings,

The Court ruled that the above would be the case where the depicted layout departs significantly from the norm or custom of the economic sector concerned.

Question 13

Explain the concept of ‘acquiescence’ under section 48 of the UK TM Act 1994.

Answer 13

Acquiescence is when a proprietor of an earlier trade mark does not oppose the use of a later registered mark over a prescribed continuous period.

Under section 48 TMA 1994, where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of 5 years in the use of a registered trade mark, being aware of that use, there shall cease to be any entitlement on the basis of the earlier TM or other right–
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the G/S in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.

The section also says that the proprietor of the later trade mark cannot oppose the use of the earlier trade mark or the exploitation of the earlier right.

Acquiescence does not apply to claims for revocation for non-use.

Acquiescence has effect however to an owner of an earlier trade mark with respect to relative grounds for refusal.

Question 14

Describe the test for passing off established in ‘Reckitt & Colman Ltd v Borden Inc [1090] (the “Jif Lemon” decision).

Answer 14

The principles established in ‘Jif Lemon’ are the starting point for a passing-off action.

Facts of case:

(1) Reckitt sold lemon juice under the name “Jif Lemon” which came in plastic yellow containers that were shaped like a lemon.
(2) Borden, a competitor, started to produce lemon juice in a similar lemon-shaped container that was only slightly larger and had a flattened side.
(3) Reckitt sued Borden for passing off their products as Jif Lemon juice. At trial, the Court found in favour of Reckitt; the decision was subsequently upheld on appeal.

The Court ruled that the elements required for a successful passing off action are:
(1) Goodwill;
(2) (Operative) Misrepresentation;
(3) Damage
This is known as the “classical trinity”.

GOODWILL
The Court ruled that the claimant must establish a goodwill or ‘reputation attached to the G/S which he supplies in the minds of the purchasing public by association with the identifying “get-up” under which his particular G/S are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the claimant’s G/S.

(OPERATIVE) MISREP{RESENTATION

(1) Misrepresentation must lead or be likely to lead the public the public to believe that G/S offered by him are G/S of claimant.
(2) Misrepresentation must actually deceive relevant section of the public (i.e. be operative). Mere confusion is not enough.

DAMAGE (or likelihood of) - must be due to misrepresentation

Question 15

Discuss briefly the important of the decision of the CJEU in ‘Chartered Institute of Patent Attorneys v Registrar of Trade Marks’, Case C-307/10’ (IP translator)

Answer 15

The Court held that the G/S for which the protection of the trade mark is sought needs t be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis along, to determine the extent of the protection conferred by the TM.

An applicant for a national trade mark who uses the class headings of the Nice Classification to identify the G/S for which the protection of the TM is sought must specify whether its application for registration is intended to cover all G/S included in the alphabetical list of that class or only some of those G/S.

If the application contains only some of those G/S, the applicant is required to specify which of the G/S in that class are intended to be covered.

If no specification of G/S are made, it will be assumed that only G/S specified in the class heading itself are sought.

Question 16

Describe briefly the importance of the decision of the CJEU in ‘Hauck v Stokke’ (Tripp Trapp Children’s chair)

Answer 16

This case relates to the interpretation of the absolute grounds for refusal of shapes which result from the “nature of the goods” (s. 3(2)(a)) or “gives substantial value to the goods” (s. 3(2)(c)).

Points made in case:
(1) Regarding shapes resulting from nature of goods, the grounds for refusal extend to signs which consist exclusively of the shape of the product with one or more essential characteristics which are inherent to the generic function or functions of that product.

(2) Hybrid shapes are covered by substantial value rule: the Court said that the concept of a shape which gives substantial value to the goods cannot be limited purely to the shape of the products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as significant aesthetic elements will not be covered.

(3) Aside from perception of the public, the Court gave other factors to consider when determining whether s. 3(2)(c) (“substantial value”) applies:
(i) nature of category of goods concerned;
(ii) its dissimilarity from other shapes in common use on the market concerned;
(iii) a substantial price difference in relation to similar products; and
(iv) the development of a promotional strategy which focusses on accentuating the aesthetic characteristics of the product in question.

[The presumed perception of the sing by the average consumer is not a decisive element, but shall still be considered.]

Question 17

Explain briefly the main differences between the UK IPO and the OHIM opposition proceedings.

Answer 17

UK

Once the application has been accepted by the Registrar, it is published in the Trade Marks Journal. In the 2 months following this, a proprietor of an earlier trade mark or right may formally oppose the registration.

If the opposition is not settled between the parties, there will be a hearing and a determination by the Registrar.

EU

Within 3 months of publication, application may be opposed on relative grounds only (unlike UK).

In contrast to UK, oral proceedings are very rare.

As in UK, only a limited set of persons is entitled to bring oral proceedings–these include proprietors of earlier requested TM, their licensees, proprietors of well known TM under Article 6bis of Paris Convention, those entitled to claim on the basis of earlier rights used in trade, as well as opposition based on prior geographical indications.

Question 18

Under what circumstances would it be possible for a TM proprietor to maintain his registration if the sign he had actually been using differed in some respects from the sign actually registered?

Answer 18

In ‘Specsavers v Asda’ [2014], the Court ruled that use of a sign that differs to the sign actually registered constitutes use (to prevent revocation) if the differences between the trade mark as registered and as used were not such as to alter the distinctive character of the registered trade mark.

In this case, it was therefore found that in order for use of the Specsavers green figurative TM to be held to constitute use of the black registered TM, the elements of the registered TM (i.e. overall shape of the same) must be distinctive enough within the TM in use so that it was sufficient to designate the origin of the goods or services in question (i.e. thing that makes registered TM distinctive must be in TM used in a way that doesn’t alter its distinctive character).

Question 19

What are the consequences of failing to record the assignment of a TM registered in the UK under the TMA 1994?

Answer 19

If an assignment is not recorded, an assignee cannot enforce the registered TM that was assigned,
Therefore, assignee will not be entitled to damages or account for profits in respect of any infringement of the registered TM occurring after the date of the transaction and before the prescribed particulars of the transaction are agreed.

Furthermore, official communications are only sent to the “recorded proprietor”.

Question 20

How is an international registration obtained under the Madrid Agreement 1891?

Answer 20

The Madrid Agreement can only be used by a person or business that has headquarters or a real and effective establishment in a country that is party to the Agreement [UK is not party to the Madrid Agreement].

(1) An applicant must apply for an international registration in a country which is a contracting state of the Agreement (this is the “country of origin”).
(2) The application must be based on a trade mark already registered in the country of origin.
(3) The application must include the name and address of the applicant; information about the base registration (registration in country of origin); a reproduction of the mark; and a statement of the goods or services to which the mark is applied.

(4) If satisfied that the application is complete, the national office of the country of origin sends the application to the WIPO International Bureau in Geneva.
(i) IB checks application complies with formalities;
(ii) If application does satisfy formalities, it is registered. The registration date is the date on which the IB receives the completed application.

(5) The IB sends the application to the national offices of the countries designated by the applicant.

Registration under the Madrid Agreement lasts for 20 years and can be renewed for further 20 year periods.

Question 21

How is an international registration obtained under the Madrid protocol 1989?

Answer 21

Applicants must apply for an international registration under the Madrid Protocol to a state which is party to the Protocol [UK is a party to the Protocol].

(1) The application must be based on a trade mark already registered in the country of origin OR a pending application of that country of origin.
(i) an application can also be based upon an application or registration at an ‘intergovernmental organisation’ e.g. EUIPO.

(2) Applications must be in English, French, or German.
(3) Applicants must designate the countries in which the mark is to be protected.
(4) The national office or intergovernmental organisation examines the international application to ensure that the international application corresponds to the basic application or registration.
(3) As in the Agreement, the office transmits the application to the IB which examines the application for formalities.
(4) The IB then transmits the application to the designated countries. As in the Agreement, the application is then treated as if it had been filed at the country’s national office.

(5) Each designated country then examines the application against its own criteria for registration.
(i) Countries normally have up to 12 months within which to notify WIPO of any objections, otherwise the mark is automatically protected in the territory.
(ii) In accordance with a special provision, the UK has up to 18 months to notify a refusal of protection.

Registration under the Protocol lasts for 10 years and can be renewed for further 10 year periods.

Question 22

Describe the effect of a registration obtained under the Madrid Protocol.

Answer 22

An international registration is essential a bundle of national rights, applied for and administered centrally. It does not lead to an “international mark”, so much as it does facilitate the acquisition of national marks.

WIPO may grant an international registration, publish the registration in the WIP Gazette, then forward the application to the designated national offices.

The application is then treated in each designated state separately as a national filing. i.e. an IR has no “unitary character”.

Question 23

Describe the effect of a successful central attack under:

(1) the Madrid Agreement; and
(2) the Madrid Protocol.

Answer 23

(1) Under the Madrid Agreement…..

A successful central attack occurs when, within 5 years from the date of international registration, the registered trade mark under which the International Registration is based is declared invalid or otherwise lost in the country of origin.

This has the effect of having all of the national registrations that are based upon the TM of the country of origin to be lost.

At the end of the 5 year period, the opportunity for central attack ends. From this point, the non-country of origin registrations are not dependent upon the fate of the mark in the country of origin.

(2) Under the Madrid Protocol……

Whilst an international registration under the Madrid Protocol is vulnerable to central attack (most obviously where the basic application is refused by the national authority), the consequences of a successful attack are not as drastic as they are under the Agreement.

Under the Protocol, it is possible to transform the international registration into a series of national or regional applications.

Under this provision, if within 3 months of cancelation, the person who was the holder of the international registration files an application for the registration of the same mark with the office of any of the designated territories, that application shall be treated as if it had been filed on the date of international registration.

Question 24

What is the absolute ground for refusal with regards to descriptive terms? What is the underlying public interest of the exclusion?

Answer 24

A trade may be refused on the absolute ground under section 3(1)(c) TMA 1994 (Article 7(1)(c) of Regulation No 40/94), which states that:

(1) The following shall not be registered–
[…]
(c) trade marks with consist exclusively of signs or indicators which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristic of goods or services.
[…]
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Underlying public interests:

(1) ensuring that the descriptive term remains freely available to be used by all traders; and
(2) descriptive terms cannot fulfil the essential function of trade marks.

Question 25

What is the methodology of assessment for absolute grounds of refusal?

Answer 25

This is CJEU guidance.

(1) Reiterate the underlying public interest of the absolute ground.
(2) Reiterate the legal test that implements the public policy consideration behind the absolute ground for refusal.
(3) Apply the legal test to the facts of the case at hand.

Question 26

What is the legal test for assessing whether a sign may serve in trade to designate the kind, quality, quantity etc. etc. or other characteristics of the goods or services?

Answer 26

The legal test for the absolute ground under section 3(1)(c):

Does a given mark for which registration is sought currently represent, in the mind of the relevant class of persons, a description of the characteristics of the goods or services?

If not, it is reasonable to assume that that might be the case in the future?

Question 27

Is section 11(2) TMA 1994 (defence of descriptive use that allows 3rd parties to use descriptive terms) also applicable if a 3rd party uses a descriptive indication as a trade mark? (Gerolsteiner Brunnen GmbH & Co v Putsch GmbH)

Answer 27

Section 11(2) TMA 1994 (defences)
(2) A registered trade mark is not infringed by–
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided that the use is in accordance with honest practices in industrial or commercial matters.

The defence is available even when the infringer is using the descriptive word as a trade mark, so long as the descriptive word describes the product and junior use is in accordance with honest practices.

In the Gerolsteiner case, the claimant alleged TM infringement of their mark ‘GERRI’ for mineral water by the defendant’s mark ‘KERRY SPRING’ for Irish mineral water. This Irish mineral water was from the Kerry Spring and sold by a company called Kerry Spring Water.

The ECJ held that the mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member state and an indication of geographical origin from another Member state is insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices.

Accordingly, the ECJ held that the claims could only prohibit the use of the geographical indication ‘KERRY’ as a TM if the use was not in accordance with honest practices in industrial or commercial matters.

Question 28

What are the criteria for determining whether a sign is descriptive according to the decision of the CJEU in OHIM v Wrigley (‘DOUBLEMINT’)?

Answer 28

Prior to this decision, the Court of First Instance found the mark ‘DOUBLEMINT’ to be allowable under Article 7(1)(c) of Regulation 40/94 (section 3(1)(c) TMA 1994). The Court of First Instance stated that signs or indications whose meaning “goes beyond the merely descriptive” are capable of being registered as Community TM are that “that term cannot be characterised as being exclusively descriptive”.

The Court of Justice found that the CFI had erred in principle: they did not apply the correct test as laid down by Article 7(1)(c).
The correct test is whether the sign could be used for descriptive purposes.
Thus, according to the CJ, a sign will be excluded from registration if “at least one of its possible meanings designates a characteristics of the goods concerned”.

The Court ruled that it is not necessary that ‘DOUBLEMINT’ is not currently a descriptive sign–what matters is whether it is likely to be in the future.

Question 29

Explain the decision in Procter & Gamble v OHIM (‘BABY-DRY’).

Answer 29

The Court ruled that the word mark ‘BABY-DRY’ was no descriptive, and so should NOT be refused registration on the absolute ground under Article 7(1)(c) Directive 40/94.

In this case, the Judge noted that descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole which they form.

Thus, the judge ruled that any perceptible difference between the combination of the words submitted for registration and the separate terms used in the common parlance of the relevant class of consumers to designate the G/S or their essential characteristics is apt to confer distinctive character on the word combination.

Thus, the Judge ruled that, putting oneself in the shoes of an English-speaking consumer, the SYNTACTICALLY UNCOMMON JUXTAPOSITION of the words in the word combination ‘BABY-DRY’ does not confer descriptive character on the word combination. Thus, the mark ‘BABY-DRY’ should not be refused registration under Article 7(1)(c) of Regulation 40/94.

Question 30

Compare and contrast the decision of the CJEU in C-383/99 Procter & Gamble v OHIM (‘BABY-DRY’) and in C-191/01 OHIM v Wrigley (‘DOUBLEMINT’).

Answer 30

In the ‘BABY-DRY’ case, the Court ruled that the mark did not have descriptive character and so should not be refused registration on the absolute ground under Art 7(1)(c) Regulation 40/94.

However, the word mark ‘DOUBLEMINT’ was found to be descriptive and therefore was refused registration under Article 7(1)(c).

In ‘DOUBLEMINT’, the Court ruled that the juxtaposition of the worlds ‘DOUBLE’ and ‘MINT’ were not syntactically unusual; the word mark is a mere juxtaposition of descriptive elements which does not give rise to a registrable mark.

In ‘BABY-DRY’, the Court ruled that the word mark consists of a syntactically uncommon juxtaposition of the words which does not confer descriptive character on the word combination.

Unsure of this point:

In “DM”, the test for descriptiveness applied was whether the mark could be used for descriptive purposes.
In “BD”, the test for descriptiveness was whether the mark was presented in a manner which distinguished the resultant whole from the usual way of designating the G/S or their essential characteristics.

Question 31

What are the criteria for assessing whether a geographical term is descriptive according to the decision of the CJEU in ‘Windsurfing Chiemsee’?

PART 1

Answer 31

Facts of case: The point at issue was whether the word ‘CHIEMSEE’, the name of the largest lake in Bavaria, could be a trade mark for sports clothing or whether such a mark fell within Article 7(1)(c) Dir 40/94 (Art 3(1)(c) 89/104).

The Court rued that to assess whether the geographical term is descriptive, the competent authority must:

(1) ascertain the semantic content of the sign;
(2) assess whether it is currently serving as a designation of the origin of the goods? (i.e. is there an association between the place and the goods?)
(3) Is it likely to serve as an indicator of geographic origin in the future.

[if answer to 2/3 are ‘yes’, the sign must be refused -my interpretation]

Factors to consider when assessing if there is an association between the place and the goods:

(1) whether consumers are familiar with the geographical term;
(2) whether consumers are familiar with the characteristics of the place designated by that name;
(3) Consumers are familiar with the category of good concerned.

Other points made by the Court:

• -If there is an established connection between the place and the products in question (e.g. Cuba for cigars; Sheffield for steel), then registration will normally be refused.
  (i) the connection is not necessarily confined to a belief that the goods are manufactured in a particular place, but might depend on the other ties, such as the fact that the goods are conceived and designed in the geographical location concerned.

Question 32

What are the criteria for assessing whether a geographical term is descriptive according to the decision of the CJEU in ‘Windsurfing Chiemsee’?

PART 2

Answer 32

The Court also gave factors to consider when assessing if there is an association between the place and the goods:

(1) whether consumers are familiar with the geographical term;
(2) whether consumers are familiar with the characteristics of the place designated by that name;
(3) Consumers are familiar with the category of good concerned.

Other points made by the Court:

• -If there is an established connection between the place and the products in question (e.g. Cuba for cigars; Sheffield for steel), then registration will normally be refused.
  (i) the connection is not necessarily confined to a belief that the goods are manufactured in a particular place, but might depend on the other ties, such as the fact that the goods are conceived and designed in the geographical location concerned.
• -The exclusion does not necessarily preclude:
  (i) geographical names that are unknown to the relevant class of persons (or at least unknown as a designation of geographical origin);
  (ii) names in respect of which, because of the type of place they designate (say, a mountain or a lake), such persons are unlikely to believe that the category of good concerned originates there.

Question 33

Are the geographical names registrable as trade marks in the UK? Explain your answer.

Answer 33

Under section 3(1) TMA 1994, trade marks which consist exclusively of indications which may serve in trade to designate the geographical origin of the goods shall not be registered–unless the mark has acquired distinctive character through the use made of it.

In ‘Windsurfing Chiemsee’, the Court provided guidance on when a mark is likely to be refused on grounds that it is a geographical indicator of origin. Specifically, the Court ruled that where there is (or is likely to be in the future) an established connection between the place and the G/S for which registration of the mark is sought, the mark is likely to be refused on the absolute ground under section 3(1)(c) TMA 1994.

Question 34

Describe the test for passing off established in Warnink v Townend [1979] (“Advocate case”).

Answer 34

The “Advocaat” decision established five characteristics that must be present in order to create a valid cause of action for passing off. These characteristics are:

(1) a misrepresentation
(2) made by a trader in the course of trade
(3) to prospective customers of his or ultimate consumers of goods or services provided by him
(4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and
(5) which causes actual damage to the business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

Question 35

What was the decision in the “Advocaat” case?

Answer 35

Facts of case: the claimants were a group of Dutch traders who had manufactured in the Netherlands an alcoholic drink known as “advocaat”. Other claimants included traders who imported and distributed “advocaat” in the UK.

The defendants had started to market a drink known as “Keeling’s Old English Advocaat” in the UK.

The claimants sued for passing off on the basis that product goodwill was attached to the term “advocaat” and was collectively owned by those who manufactured/sold the product.

The essential ingredients of advocaat are the spirit brandewijin, egg yolk, and sugar. The “Keeling’s” drink was made from dried egg yolk powder mixed with Cyprus sherry.

Using the aforementioned 5 characteristic test for passing off, the judge was satisfied that members of the public believed or had been deliberately induced by the defendants to believe that they were buying advocaat rather than the “Keeling’s” drink.

It was found that this caused damage to the claimants in the trade and goodwill of their business both:

(1) directly in loss of sales;
(2) indirectly in the damage of reputation and dilution (of the term advocaat).

Question 36

Explain briefly the circumstances in which the trade mark owner may oppose further dealings in goods which he/she has put on the marked in the European Economic Area.

Answer 36

This question relates tot eh exhaustion of TM rights.

The relevant provision is section 12 TMA 1994:

(1) A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
(2) Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market).

Examples of where the condition of the goods has been changed or impaired:

(i) by altering the goods (e.g. where quality of goods is undermined);
(ii) depackaging (goods that have been removed from packaging);
(iii) repackaging; and
(iv) rebranding (parallel importers altering the mark)

Note on consent……

Consent must amount to an unequivocal demonstration of an intention to renounce the right to control further distribution.

Distribution of free samples, whether labelled so or otherwise, is not putting goods onto the market (City v Simex)

Consent may be implied by circumstances

No consent if goods are placed onto market by licence in a way which is outside the scope of the licence.

Question 37

Briefly explain the significance of the following cases in relation to the condition for the goods being changed or impaired:

(1) Sony v Tesco
(2) L’Oreal v Ebay
(3) Bristol Meyers v Paranova

Answer 37

(1) Example of goods being altered
Games console sold in France were adapted for UK and sold in UK and were of an inferior quality to the console authorised for sale in UK)

(2) Depackaging
The Court ruled that TM proprietor would have a legitimate reason if the effect of removing the packaging was that the essential information, such as the identity of the manufacturer or person responsible for marketing the product, was missing.
(i) in case, a number of sellers had been selling goods on the defendant’s website without their original packaging.
(ii) the TM owner can also object if the depackaging damages the image of the product and therefore the reputation of the mark.

(3) Repackaging
The Court ruled that the TM owner could not prevent the parallel importation of goods where the use of the TM right by the owner contributes to an artificial partitioning of the markets between member states (restriction upon freedom of movement of goods).

However, the Court further ruled that parallel importing of repackaged goods is permissible only where:

(i) the repackaging does not adversely effect the original condition of the product;
(ii) the parallel importer complies with certain provisions as to the labelling and provision of samples (packaging must indicate who manufacturer is and who repackaged it; TM owner must be given advanced notice that the repackaged product is being out on sale).
(iii) the quality of the packaging does not adversely impact on the reputation of the mark.

Question 38

List four defences that are available to the infringement of a trade mark registered under the TMA 1994.

Answer 38

Section 11 details limits on effect of registered TM

(1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered.
(2) A registered trade mark is not infringed by–
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided that the use is in accordance with honest practices in industrial or commercial matters.

Summary of defences:

Section 11(2)(a) USE OF OWN NAME/ADDRESS
Hotel Cipriani Srl v Cipriani (Grovesnor Street)
(1) The court held that where this defence would be available in respect of a trading name would depend on:
(i) what the trading name was that had been adopted;
(ii) the circumstances in which it had been adopted; and
(iii) whether its use was in accordance with honest practices.

Section 11(2)(b) DESCRIPTIVE TERMS
   Gerolsteiner Case (GERRI/KERRY SPRING)
   (1) Although there was a finding of likelihood of aural confusion, use was in accordance with honest practices.

Section 11(2)(c) NECESSARY TO INDICATE INTENDED PURPOSE
Common to spare parts traders–people who are not formally connected with TM owner but still need to refer to TM in course of trade.
Gillette v LA Laboratories is relevant (see other slide)

Question 39

What is ‘honest use’ within the meaning of Article 6(1)(c) TMD as established by the CJEU in Gillette v LA Laboratories Ltd?

Answer 39

Facts of case:
Gillette sues LA Labs, a business entity in the business of selling razors in Finland, for the unauthorised use of their ‘Gillette’ and ‘Sensor’ trade marks.

LA Labs had used Gillette’s TMs on a sticker attached to the package of the razor blades. The sticker stated: ‘All Parason Flexor and Gillette Sensor handles are compatible with their blade.’

In this case, the CJEU held that “honest use” within the meaning of Article 6(1)(c) TMD constituted in substance the expression of a DUTY TO ACT FAIRLY in relation to the legitimate interests of the TM owner. The ECJ held that use was not honest if, for example, the use:

(1) Gives impression of commercial connection;
(2) Affects value of TM by taking unfair advantage of character or repute;
(3) It entails the discrediting or denigration of that mark;
(4) Represents products as an imitation or replica of product bearing TM.

The Court also held that:

The provision in Article 6(1)(c) (section 11(2)(c)) was not limited to spare parts and accessories, but that this was cited only by way of example; all categories of uses should be considered equally.

Use was “necessary” where it was the only way to give the public complete and comprehensible information on the intended purpose of the product in order to preserve undistorted competition in the market.

Question 40

Explain the principle of seniority in the context of the European Union Trade Mark System/Community Trade Mark Registration.

Answer 40

Applicants who seek registration of an EUTM may claim the seniority of earlier national registrations of the same mark of which they are the proprietor.

Seniority can be claimed either before or after registration of the EUTM.

To apply for seniority, an applicant must be able to show that:

(1) the earlier national mark is for the same sign;
(2) the same G/S; and
(3) has the same proprietor as the EUTM.

The effect of a seniority claim is that, even though the national registration ceases to exist (e.g. because of lack of renewal or surrendered), the proprietor of the EUTM continues to have the same rights as if the national mark had continued to be registered.
(i) national rights can lapse without proprietor being prejudiced re EUTM.

If assigning CTM, seniority claim lost if don’t also assign national right.

Question 41

Describe the effects of invalidity and revocation under the UK TMA 1994.

Answer 41

INVALIDITY

Section 47(6)
Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:
Provided that this shall not affect transactions past and closed.

Effect: void ‘ab initio’, i.e. as though it was never registered. However, there is no effect on past and closed transactions.

REVOCATION

Section 46(6)
Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—
(a)the date of the application for revocation, or
(b)if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.

Question 42

What are the grounds for invalidity?

Answer 42

(My interpretation of Act… grounds for invalidity: absolute and relative grounds, and earlier rights)

Section 47
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).

Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(2) The registration of a trade mark may be declared invalid on the ground—
(a)that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b)that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

Question 43

What are the grounds for revocation?

Answer 43

Section 46
(1)The registration of a trade mark may be revoked on any of the following grounds—

(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Question 44

Explain the priority system for trade mark applications under the Paris Convention.

Answer 44

Section 35 TMA 1994 provides that an application for a registered trade mark can claim priority to an earlier application, providing the later application:

(1) covers the same mark as the earlier application;
(2) covers the same or all of the goods/services covered by the earlier application.

Following filing in a state which is a party to the Paris Convention, an applicant has 6 months in which they can file further applications claiming priority to that first application.

The effects of the priority claim is that the date of priority counts as the date of filing of the application.

The rights of the application will take precedence over any rights arising from a trade mark filed after the priority date.

Question 45

Describe the nature of searches for prior rights conducted against a CTM application.

Answer 45

Owners of CTM must request and pay for notification services wherein the Registrar performs a prior rights search. There is no objection to registration on relative grounds.

The purpose of notification is:

(1) to enable the applicant to make informed choices about whether or not to proceed;
(2) to inform applicant of earlier mark where there is a serious right of opposition;
(3) gives opportunity to oppose later marks where there appears to be reasonable grounds for doing so.

Not sure about the accuracy of the above list……..

Question 46

Describe briefly the importance of the decision of the ECJ in Windsurfing Chiemsee regarding acquired distinctiveness.

Answer 46

Section 3(1) TMA 1994 says that marks that are devoid of distinctive character, are descriptive, or customary shall not be registered. But such a mark shall not be refused registration by virtue of paragraphs (b), (c), or (d) above if, before the date of application for registration, it has in fact acquired distinctive character as a result of the use made of it.

In Windsurfing, the Court held that a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the G/S in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that G/S from the G/S of another undertaking (i.e. mark performs the essential function of the trade mark).

In this case, the following relevant factors were considered in assessing whether the mark had acquired distinctive character:

(1) market share held by the mark;
(2) How intensive, geographically widespread, and longstanding use of the mark has been;
(3) the amount invested by the undertaking in promoting the mark;
(4) the proportion of the relevant class of persons who because of the mark identify goods as originating from a particular undertaking;
(5) statements from chambers of commerce and industry or other trade and professional associations.

If a significant proportion of the relevant class of persons identify goods as originating from particular undertaking because of the trade mark, it must have acquired distinctive character.

Question 47

Explain briefly the type of evidence required for an applicant to establish distinctiveness acquired through use when applying to register a sign as a EUTM.

Answer 47

WIndsurfing v Chiemsee:

(1) cannot make reference to genera, abstract data such as predetermined percentages. (This means in practice that the competent authorities cannot require higher percentages in the name of some public policy consideration).
(2) Opinion poll may be used where competent authority has difficulty in assessing acquired distinctiveness of mark.

Netsle v Mondelez:

(1) Evidence must refer to entire territory in relation to which the ground for refusal applied.

(2) Don’t need separate evidence for each member state–can provide evidence relevant for groups of member states which:
(i) fall within same distribution network;
(ii) have geographical, cultural, or linguistic proximity such that the relevant public of the firs has a sufficient knowledge of the products and services that are present on the national markets of the second.

[result of this case: evidence provided was not sufficient to prove that there was acquired distinctiveness throughout the whole of the EU]

Overbank

Results of survey must be considered along with all the other relevant factors

Question 48

Explain the public policy consideration underlying action 3(1)(b) TMA 1994 which requires the refusal to registration of marks that are devoid of distinctive character.

Answer 48

The public policy consideration underlying section 3(1)(b) TMA 1994 is to preclude registration of trade marks which are devoid of distinctive character which alone renders them incapable of fulfilling the essential function of the trade mark.

Question 49

ESSENTIAL FUNCTION OF TRADE MARK

Answer 49

To guarantee the identity of the origin of the market product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.

The trade mark therefore serves the purpose of aiding the consumer to make a repeat purchase of a product or, as the case may be, to avoid the repeat purchase of a product.

Question 50

Cant the law of passing off protect the commercial interests of well-known personalities? Explain your answer.

Answer 50

The UK law of passing off can extend to well-known personalities.

For a passing off action in relation to well-known personalities to be successful:

(1) the well-known personality must be in the “endorsement business” under the mark i.e. “must be trading”;
(2) the well-known personality must have goodwill due to a significant, and commercially exploitable, reputation; and
(3) the misrepresentation is likely to deceive a significant section of the market into thinking that the G/S have been endorsed, recommended, or approved of by the well-known personality.

As such, in ‘Robyn Rihanna Fenty v Arcadia’, the Court held that the sale by Topshop of a t-shirt bearing Rihanna’s image amounted to passing off.

Question 51

Describe legal significance of ‘Robyn Rihanna Fenty v Arcadia’

Answer 51

In ‘Robyn Rihanna Fenty v Arcadia’, the Court held that the sale by Topshop of a t-shirt bearing Rihanna’s image amounted to passing off.

This was found after taking account of the fact that:

(1) Rihanna had a reputation and goodwill in connection with her position as a ‘style icon’;
(2) there had been collaboration between Rihanna and Topshop in the past;
(3) the photo on the t-shirt was taken when Rihanna was filming her music video for a song on her latest album–increasing the likelihood that fans would think the image came from promotional material for the album.

Taking into account all of the above factors, Rihanna successfully argued that the t-shirt amounted to a misrepresentation and was likely to deceive members of the public into believing it was approved of and authorised by her.

Passing off in relation to well-known personalities was also found in the earlier case ‘Irvine v Talksport’, in which a famous athlete successfully sued for passing off by representation as to endorsement.

Question 52

What factors indicate, according to the caselaw of the CJEU, that a mark has been registered in bad faith?

Answer 52

In ‘Lindt & Sprungli AG v Franz Hauswirth’ Case, the CJEU established the factors to consider when determining whether an applicant is actin gin bad faith:

(1) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought.
(2) the applicant’s intention to prevent that 3rd party from continuing to use such a sign;
(3) the degree of legal protection enjoyed by the 3rd party’s sign and by the sign for which registration is sought.

Further points made by the Court:

–need to take into account all relevant factors relevant to the particular case at the date of filing of the CTM application.

–not limited to situations in which the applicant has no intention of using the mark.

Question 53

Explain briefly the concept of dilution by tarnishment.

Answer 53

One of the relative grounds for refusal is specified under section 5(3) TMA, which provides that a trade mark will not be registered where:

(a) a later mark is identical with or similar to an earlier (registered) mark;
(b) the earlier mark has a reputation in the UK (or the EU in the case of an EUTM);
(c) the use of the later TM must either take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark; and
(d) the use of the later TM is without due cause.

One of the forms of injury recognised by section 5(3) is detriment to the repute of the earlier trade mark. This is often referred to as dilution by tarnishment.

In ‘L’Oreal v Bellure’, the Court ruled that such detriment to the repute of the mark occurs where the G/S for which the identical or similar mark is used by the 3rd party may be perceived by the public in such a way that the earlier TM’s power of attraction is reduced.

Question 54

What is said under section 1(1) TMA 1994?

Answer 54

Section 1
(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

[note that an absolute ground for refusal is section 3(1)(a) signs which do not satisfy the requirements of section 1(1)]

[also note that important changes to UK law will come into effect on 14 Jan 2019 in order to implement the European Trade Mark Directive 2015]

Question 55

What is one of the key differences between the new directive (Directive 2015/2436) and the old directive (Directive 2008/95/EC)?

Answer 55

Art 2 Directive 2008/95/EC

A trade mark may consist of any [1] sign [2] capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are [3] capable of distinguishing the goods or services of one undertaking from those of other undertakings

Art 3 Directive 2015/2436

A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; (b) and being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

New directive has no graphical representation requirement.

Question 56

What are the criteria established in Ralph Sieckmann v DPMA, Case 273/00 for assessing the representation requirement?

Answer 56

Facts of case:

Mr Sieckmann attempted to register a smell–but was unsuccessful. The Court found that the sign was incapable of being graphically represented:

Chemical formula: not sufficiently intelligible (few people would recognise chemical represented as having claimed smell)
Description of smell in words: not sufficiently clear, precise, or objective
Deposit of odour sample: not sufficiently durable.

Furthermore, a combination of any or all of the above did not satisfy requirement.

A mark must be capable of being represented graphically (old directive), particularly by means of image, lines, or characters.

According to the Court, the representation must be:
CLEAR
PRECISE
EASILY ACCESSIBLE
SELF-CONTAINED
 DURABLE
INTELLIGIBLE
OBJECTIVE

The decision also sets out the reasons for each requirement (though couldn’t find reason for precision):

Durable–as the trade mark term of protection is indefinite subject to renewal fees, invalidation, etc.

Clear–so TM can fulfil its essential function; to avoid error in the process of identifying/perceiving the sign.

Objective–to avoid any element of subjectivity in the process of identifying and perceiving the sign.

Self-contained; easily accessible; intelligible–so that users of the register are able to determine the precise nature of the mark on the basis of its registration.

Question 57

Describe the meaning and the purpose of the “sign” requirement, as established in ‘Dyson Ltd v Registrar of Trade Marks’, Case C-321/03

PART 1

Answer 57

Case decided under the old directive, but still applies under the new directive.

Facts of case:

Dyson applied for 2 marks which are described as follows: “the mark coasts of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.’ A picture of one or the other of the two versions of the bagless vacuum cleaner manufactured and marketed by Dyson was attached to each of the descriptions.

Result 1: Dyson’s application did not constitute a sign within the meaning of Article 2 of the Directive.

The decision cited ‘Heidelberger Bauchemie’, saying that the purpose of the sign requirement is to prevent the abuse of TM law or order to obtain an unfair competitive advantage.

Thus, the Court found that the mark was not a sign for the following reasons:

(1) mark was merely a property of the product concerned and therefore did not constitute a “sign”;
(2) in other words, the mark is a concept as the subject-matter is claimed in a general and abstract manner.
(3) it follows that the holder of such a trade mark would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collection bin on their external surface, irrespective of its shape.

Question 58

Describe the meaning and the purpose of the “sign” requirement, as established in ‘Dyson Ltd v Registrar of Trade Marks’, Case C-321/03

PART 2

also give extra info on case re graphical representation requirement and its purpose

Answer 58

In addition, the Court found that the subject-matter for which registration was sought cannot be regarded as a sign capable of being represented graphically.

The PURPOSE of the graphical representation requirement is to define the mark itself in order to determine the precise subject-matter of the protection afforded by the registered mark to its proprietor.

Thus, the requirement has the effect of:

(i) enabling competent authorities to know what the mark is so that they can assess its protect-ability;
(ii) enabling courts to determine the scope of the right when assessing infringement;
(iii) enabling the mark itself to perform its function since it can be perceived by the consumer in a precise and uniform manner.

Thus the Dyson mark refused under this requirement for the following reasons:

–ambiguous: subject-matter can take a multitude of different shapes and appearances–which will depend on vacuum cleaner and models/technological developments.

–non-uniform: the appearance of the transparent bin and the way in which it is integrated into the vacuum cleaner will change over the years.

ULTIMATE RESULT:
The Court ruled that a functional feature which forms part of the appearance of a product and which is capable of taking on a multitude of appearances cannot be regarded as a sign capable of being represented graphically within the meaning of Article 2 of the Directive.

Question 59

Are scents registrable in the UK? Explain your answer.

Answer 59

Under section 1(1) TMA 1994, a trade mark means any sign capable of being represented graphically which is capable of distinguishing G/S of one undertaking from those of other undertakings. The Act does not expressly exclude scents.

However, as of yet, no form of graphical representation has been devised for a smell mark that satisfies the criteria for graphical representation set out in ‘Sieckmann’.

Question 60

Are shapes registrable as trade marks in the UK? Explain your answer.

Answer 60

Yes. Under section 1(1), a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

However, a shape may be refused registration on a number of absolute grounds.

Under section 3(2) TMA 1994, a sign shall not be registered as a trade mark if it consists exclusively of—

(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.

Question 61

Can a shape which gives substantial value to that product be registered as a trade mark in the UK where, prior to the application for registration, it has acquired a distinctive character through use?

Answer 61

A sign which falls foul of section 3(2) shall not be registered even if it has acquired distinctiveness through use.

The “acquired distinctiveness exception” only applies to signs devoid of distinctive character, descriptive signs, or customary signs:

(1)The following shall not be registered—
(a)signs which do not satisfy the requirements of section 1(1),
(b)trade marks which are devoid of any distinctive character,
(c)trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d)trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

In ‘Benetton Group v G-Star International’, the Court held that a shape of a product which gives substantial value to that product cannot constitute a trade mark under Article 3(3) TMD where, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the products in question.

Question 62

Describe briefly the public interest underlying the absolute grounds for refusal contained in section 3(2)(b) TMA 1994.

Answer 62

Each subsection of s 3(2) is dedicated to the promotion of special aspects of public policy, however the subsections share some common public policy considerations.

Public policy considerations specific to section 3(2)(b) (shapes necessary to obtain a technical result):

(1) There is a public policy in preventing TM protection limiting the possibility of components supplying a product incorporating functional characteristics.
(2) There is a public policy to prevent TM protecting limiting competitors’ freedom of choice in regard to the technical solutions they wish to adopt.
(3) There is a public policy to allow signs performing a technical function to be freely used by all and not end up being reserved to one undertaking alone because they have been registered as trade marks.
(4) There is a public policy to prevent perpetual patents.

Question 63

What are the public policy considerations underlying Section 3(2) TMA as a whole?

Answer 63

(1) There is a public interest in preventing the monopolisation of technical solutions of functional characteristics of a product which a user is likely to seek in the products of competitors.
(2) This is a public interest in preventing the exclusive and permanent rights which a trade mark confers from serving to extend indefinitely the life of other rights which EU legislature has sought to make subject to limited periods.

Question 64

What is said in ‘Philips v Remington’ re section 3(2)(b) (Article 3(1)(e))?

Answer 64

In this case, the Court held that the rationale of the ground for refusal in Article 3(1)(e) is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the product of others.

Furthermore, the Court ruled that the fact that there are other shapes which could achieve the same technical result cannot overcome the ground for refusal or invalidity contained in Article 3(1)(e).

Question 65

Are sounds registrable in the UK? Explain your answer.

Answer 65

Yes. Sounds may be registrable in the UK, as long as the requirements under the TMA 1994 are satisfied and the sign can be graphically represented in a way that satisfies the ‘Sieckmann’ requirements.

In the case ‘Shield Mark BV v Joost Kist’, sound marks were found to be registrable.

The Court ruled that in order for the ‘Sieckmann’ requirements to be satisfied, the sound must be represented by notes on a stave (the usual form of representing musical notations).

The Court further held that:

(1) Sound marks must be indicated as such in the application.
(2) Written description in the present case (“first 9 notes of Fur Elise” and “a cockcrow”) lacks precision and clarity.
(3) Onomatopeia (“kukelekuuu”) is unclear–is the protection for the word as pronounced or the actual sound or noise it’s trying to convey?
(4) Sequence of notes (E, D, C,…) is not clear, precise, or self-contained (can’t determine pitch, duration etc.)

Question 66

Are colours registrable as TM in the UK? Explain your answer. (What are the main obstacles?)

Answer 66

Is a colour capable of being a sign?

In ‘Libertel’, the Court ruled that a colour may constitute a sign and that it depends on the context in which the colour is used (i.e. if specified in relation to a product/service).

Is a colour capable of being graphically represented?

In ‘Sieckmann’, the Court ruled that a mark must be capable of being represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective.

In ‘Libertel’, it was ruled that a colour may be graphically represented in such a way that it fulfils the ‘Sieckmann’ requirements:

(1) a sample of the colour;
(2) a written description in words;
(3) a colour designation from an internationally recognised identification code.

Is a colour capable of distinguishing the goods or services of one undertaking from those of another?

The absolute ground for refusal to consider here is where the sign is devoid of distinctive character.

The Court in ‘Libertel’ held that the public interest underlying Article 3(1)(b) of First Directive 89/104, a provision which is identical to Article 7(1)(b) of Regulation 40/94, is directed at the need not to restrict unduly the availability of colours for other traders who offer for sale G/S of the same type as those in respect of which registration is sought (this is to maintain a system of undistorted competition).

The Court recognised that it may be difficult to argue the distinctive character of colours, as consumers are not in the habit of making assumptions about the origin of goods based on their colour.

The Court ruled that in normal circumstances, where there is no prior use, distinctiveness is inconceivable.
(i) only arguable where the number of goods or services for which the mark is claimed is very restrictive and the relevant market is very specific.

A colour may acquire distinctiveness after the normal process of familiarising the relevant public has taken place.

Thus, main obstacles to registration are:

(1) graphical representation;
(2) distinctive character.

Question 67

Are colour combinations registrable in the UK? Explain your answer.

Answer 67

Yes.

As always, a given colour combination must fall within the meaning of a “trade mark” under section 1(1). Thus, it must be a sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

With regards to the “sign” requirement, in ‘Heidelberg’ the Court ruled that colours or colour combinations are capable of being a sign when used in relation to a product or service. [The Court said that colours are normally a simple property of things […]. Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. Furthermore, the Court said that the purpose of the sign requirement is to prevent the abuse of TM law or order to obtain an unfair competitive advantage.]

With regards to the graphical representation requirement, it must be satisfied in accordance with ‘Sieckmann’.

In ‘Heidelberger’, the Court ruled that a mere juxtaposition of 2 more colours, without shape or contours, or a reference to 2 or more colours ‘in every conceivable form’, is not registrable. Such a mark is not precise, and therefore is not capable of being represented graphically.

Furthermore, this type of mark would encompass far too many possible combinations and interpretations, and it would be impossible to say that a consumer would be able to remember each one so as to repeat with certainty the experience of the purchase.

Therefore, the Court ruled that for a combination of colours to be registrable:
A graphic representation, designated in the abstract and without contours, must be SYSTEMATICALLY ARRANGED, by associating the colours concerned in a predetermined and uniform way.

Question 68

Describe briefly the functions of the trade marks that enjoy legal protection according to the caselaw of the CJEU.

Answer 68

Functions of TMs:

• -Essential function;
• -Advertising function;
• -Investment function;
• -Communication function.

ESSENTIAL FUNCTION
This is to guarantee the identity of the origin of the marketed goods or services to the consumer or end-user by enabling him, without any possibility go confusion, to distinguish the goods or services from others which has another origin.

Also note that the public interest underlying the absolute ground for refusal regarding lack of distinctive character is identical to the essential function of the trade mark.

ADVERTISING FUNCTION
Trade marks function as a vehicle for advertising. (their special characteristics are brevity and continuity in use, both of which are essential to their symbolic function)

COMMUNICATION FUNCTION
Trade marks operate in the public interest insofar as they increase the supply of information to consumers and thereby increase the efficiency of the market.

This argument highlights the fact that TMs are a shorthand way of communicating information that purchasers need in order to make informed purchasing choices.

INVESTMENT FUNCTION
Trade marks are a reward for investment. TMs help to assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.

Trade mark law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalising on a consumer’s inability quickly to evaluate the quality of an item offered for sale.

Question 69

When would a junior use affect the origin function of the earlier trade mark in the context of AdWord advertising?

Answer 69

The ‘Google France’ case relates to AdWord advertising.

Facts of case:

Google France sold trade marks as keywords such that when that keyword is entered into a search, internet users are shown, on the basis of the keyword being identical to a mark, a third party’s ad–such as that of a competitor of the proprietor of that mark.

The Court ruled that a use of a trade mark in the context of AdWords advertising adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword:

(i) does not enable reasonably well-informed and reasonably observant internet users
(ii) or enables them only with difficulty
(iii) to ascertain whether the G/S concerned by the advertisement
(iv) originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor, or, on the contrary, originate from a third party.

[As an aside, in this case it was ruled that creating the technical conditions necessary for the use of a sign as an AdWord does not amount to “use of the earlier trade mark” (as TM was not used in Google’s own commercial communication). Thus Google was not liable for infringement as had not used earlier right.]

Question 70

When would a junior use affect the advertising function of the earlier trade mark?

PART 1

Answer 70

There are 3 cases which deal with this issue:

• -Google France
• -Interflora v Marks and Spencers
• -Cosmetic Warriors v Amazon

GOOGLE FRANCE
This case related to selling AdWords identical to registered trade marks for advertising purposes. The Court ruled that the use of the sign identical with anther person’s trade mark in a referencing service such as that at issue in the Google France case is not liable to have adversely affected the advertising function of the trade mark.

This is because the website of the proprietor of the mark will appear in the natural results. That display which is, moreover, free of charge, means that the visibility to internet users of the G/S of the proprietor of the mark is guaranteed, irrespective of whether or not that proprietor is successful in also securing the display, in one of the highest positions, of an ad under the heading ‘sponsored link’.

INTERFLORA V MARKS AND SPENCERS
The Court ruled that the TM proprietor may still use his mark as an instrument of sales promotion in his commercial strategy. Advertising function is not necessarily impaired just because the TM proprietor has to intensify is marketing efforts (unless costs become excessive).

[also found in this case that INVESTMENT function is impaired if the junior use substantially interferes with the proprietor’s use of its TM to acquire or preserve a reputation capable of attracting customers and retaining their loyalty.]

See other slide for COSMETIC WARRIORS

Question 71

When would a junior use affect the advertising function of the earlier trade mark?

PART 2

Answer 71

COSMETIC WARRIORS V AMAZON
The advertising function of the TM was found to be impaired because the mark was used to divert consumers from claimant to other sellers.

Function was impaired by fact that mark was used to divert customers from plaintiff to other sellers.

Facts of case:
(1) Claimants (selling under brand name “LUSH”) alleged trade mark infringement by the defendant’s website.

(2) Claimant’s declined to market their products through the website (Amazon). The defendants used the mark to catch searches and direct them to competing products (Amazon had bid on words such as “LUSH” within the Google AdWords service so as to trigger a sponsored link advertisement appearing on the Google search engine results page whenever a consumer typed “Lush” into the search box.)

Question 72

Additional remarks on Cosmetic Warriors v Amazon?

Answer 72

The Court found Amazon guilty of:

(1) infringement of CW’s TM due to double identity.
(2) impairing the origin function of CW’s TM
(3) impairing the investment function of CW’s TM

(1) CW’s TM was used in Amazon’s commercial communication thus Amazon had “used” the TM for the purposes of infringement. (Specifically, infringement due to using senior mark as keyword to promote goods sold through its online platform)
(2) Given that no Lush products were offered on Amazon, consumers would have difficulty to find that the goods were not the trade mark proprietor’s.
(3) The Court found the investment function of CW’s TM to be impaired because there was harm to the reputation of the TM–the claimant did not want to be associated with Amazon (ethical company disapproves of Amazon’s attitude to UK taxation).

Question 73

Argos Ltd v Argos Systems Inc [2017] EWHC 231 (Ch) (15 February 2017)

What were the facts of this case?

Answer 73

This decision was an appeal of a decision made by the Court of first instance (HC?). Court of appeal came to the same conclusion that there was no infringement–but this ws based on fact that advantage was no unfair only. CA disagreed with Court of first instance that there was no link and that defendants were targeting people in UK.

[Decided in HC and not addressed in Appeal:
HC ruled that origin function of trade mark was not impaired since evidence suggested that users visited the website of Argos Systems (US) only for a few seconds as they immediately realised that they did not reach website they were looking for and then moved on to get back to the website of Argos UK.
Dilution by blurring does not come into play since evidence suggested that users visited the website of Argos Systems (US) only for a few seconds as they immediately realised that they did not reach website they were looking for and then moved on to get back to the website of Argos UK]

Facts of case:

Argos UK (the well-known UK based retailer) owns two EU trade marks for ‘ARGOS’, registered for (amongst other services) advertising and retailed related services. It has a number of physical stores, as well as a website – www.argos.co.uk

Argos US is a software company, trading in CAD systems for use within the construction industry. Its website appears at www.argos.com

As a partner in Google’s AdSense programme (and so allowing third party adverts to appear in its website) Argos US’ website displayed third party adverts, including those for Argos UK (who was a member of AdSense and AdWords programmes, not as a partner, but as an advertiser). Due to the high rate of internet users clicking on the .com website (which the evidence demonstrated, was often visited in the erroneous belief that it was the website for Argos UK) and the interplay between the AdSense and AdWords programmes, Argos US began to earn money from those clicks.

Argos UK argued that this took unfair advantage of, and thereby infringed, its EU trade mark.

POINT AT ISSUE: Can a US corporation selling construction software only in the Americas under the name ARGOS be sued for infringement of a registered trade mark by a UK based consumer goods retailer who trades mainly in the UK and Ireland under the same name?

Question 74

Argos Ltd v Argos Systems Inc [2017] EWHC 231 (Ch) (15 February 2017)

What was the legal significance of this case?

Answer 74

The issues before the Court of Appeal were:

(1) Had the defendant targeted the UK?
(2) Did the defendant’s use of the sign give rise to a link between the sign and the claimant’s mark?
(3) Did the defendant’s use of the sign take unfair advantage of the distinctive character or repute of the claimant’s trade mark?
(4) Was the defendant’s use of the sign “without due cause”? and
(5) Was the defendant entitled to make bona fide use of its own name?

COURT RULED THAT:

(1) AdWords/AdSense ads on US website did target UK customers
(2) In order for this link to be established, it is sufficient that the sign calls the trade mark to the mind of the average consumer (this was established by the CJEU in Adidas-Salomon v Fitness World and the Intel Corp case). However, it is possible to establish a link even without a calling to mind. For example, in Interflora, there was found to be the relevant link despite the fact that the consumer already had the trade mark in mind when they commenced their keyword search.

Court ruled there was a link because customers had come to Argos Systems’ website on the strength of Argos UK’s website and consequently already have the relevant ARGOS mark in mind.

(3) What is unfair advantage? The court went back to basics by looking at the CJEU decision in L’Oreal v Bellure

In that case, the court said that it was all about riding on the coat-tails of a mark with a reputation by seeking to benefit from the mark’s power of attraction, reputation and prestige by exploiting the marketing effort expended by the trade mark’s owner without paying any form of compensation. However, there are limits to unfair advantage, particularly in these unusual circumstances.

If the Argos name and domain name had been deliberately selected the court may well have considered the advantage that Argos Systems obtained to have been unfair, however, in this case, the internet traffic was initially unwanted and expensive due to the high bounce rate and participation in Google AdSense is a fairly common business practice. There was no attempt made by Argos Systems to draw a link with Argos UK on their website so it was immediately clear to visitors that they had come to the wrong place. Further, the revenue raised was minimal in the context of Argos Systems’ overall business.

Consequently whilst Argos Systems did obtain an advantage, the Court of Appeal saw no reason to overturn the High Court judge’s conclusion that this advantage was not unfair.

[Notes from slides…. Lord Justice Floyd: It is true that ASI could have ceased to participate in the AdSense programme. In those circumstances it could have left the misdirected traffic to work out for itself that it was in the wrong place or, perhaps more helpfully, have provided a simple link for internet users to click on if they were seeking AUL instead to take them back to AUL’s website. The fact that these alternatives exist does not, in my judgment, make it follow that the AdSense solution to the problem was unfair.]

On finding unfair advantage, did not need to consider (4) and (5).